Delhi High Court: Prathiba M. Singh, J., has restrained Kareem Dhanani from opening any further restaurants under the marks “KARIM/KARIM’S/KAREEM/KAREEM’S” or any other marks which are identical or deceptively similar to the Plaintiff’s marks “KARIM/KARIM’S/KAREEM” till the next date of hearing.
Vide an order the defendant had been directed to file a list of his restaurants which were operating in the name of ‘KAREEM’S’. Subsequently, no affidavit was filed, and none had appeared for the defendant. Accordingly, vide an order the defendant was granted a last and final opportunity to appear.
Counsel for the defendant had entered appearance and submitted that his client was currently running 41 restaurants, the details of which had been handed over along with an affidavit of the defendant.
The plaintiff was the proprietor of the well-known trademark “KARIM/KARIM’S/KAREEM” as also of the trading name – M/s Karim Hotel Pvt. Ltd., of which the word/mark “KARIM” formed a prominent and essential feature.
Further, the founder of the plaintiff coined and adopted the trade name “KARIM’S” in the year 1913 and the said mark was being used by the plaintiff in respect of restaurants, catering and other related businesses for more than 100 years.
Adding to the above, it was submitted that the word “KARIM’S” was exclusively and uniquely associated with the plaintiff for high-quality Mughlai Food.
The Plaintiff has trademark registrations in various classes including Class 16, 29, 30, 42, 43, both for the mark “KARIM” and “KAREEM” as also devices, logos and other derivatives thereof. The Plaintiff also has registrations for the caption “Secret of good mood Taste of Karim’s food” in Classes 16, 30 and 43. The Plaintiff also uses the domain name www.karimhoteldelhi.com, accessible to customers both in India and abroad.
In December 2014, the plaintiff came to know that the defendants were using the identical mark “KAREEM’S”, after which a legal notice was issued to them. The defendant took a plea that it had a registration for the device mark/logo “KAREEM’S”. Further, considering the said registration, the plaintiff had filed a petition seeking cancellation of the defendants’ mark before the IPAB and in view of the said cancellation petition, an infringement suit was stayed by this Court.
The present suit seeking a permanent injunction to restrain infringement, passing off, delivery up, damages etc., was filed by Plaintiff on the ground that, owing to the long delay in the disposal of the said cancellation petition, Defendant was continuing to expand their restaurant business.
Plaintiff submitted that there is enormous confusion being caused between the plaintiff’s and the defendant’s restaurant and the mark of the plaintiff was being diluted.
Analysis and Decision
High Court noted that the present case was the second round of litigation between the parties.
Bench added that, a perusal of the record shows that Plaintiff is the prior owner and user of the marks “KARIM/KARIM’S/KAREEM” for Mughlai food and North Indian delicacies, since the year 1913.
The Court stated that, considering the fact that Plaintiff was the prior user, adopter and owner of the marks “KARIM/KARIM’S/KAREEM”, the continued use of the said mark by Defendant would result in passing off and deception.
It was found that the defendant has opened 41 restaurants already, hence this Court opined that a balance would have to be struck so as to ensure that neither party is prejudiced irreparably.
Owing to the long adoption of the Plaintiff’s marks “KARIM/KARIM’S/KAREEM” and the goodwill and reputation which the Plaintiff’s restaurants enjoy, not only in India but internationally, this Court issued the following directions:
(i) The Defendant shall not open any further restaurants under the marks “KARIM/KARIM’S/KAREEM/KAREEM’S” or any other marks which are identical or deceptively similar to the Plaintiff’s marks “KARIM/KARIM’S/KAREEM” till the next date of hearing. The said order would extend to the Defendant as also any entity which may be promoted/incorporated by/associated with the Defendant or his family members.
(ii) The Defendant shall also ensure that in the restaurants run by him or by his franchises, no representation is made to the customers that the Defendant is associated with the Plaintiff – KARIM/KARIM’S/KAREEM Restaurant from Jama Masjid or Delhi.
(iii) In this regard, at least two public notices shall be issued in prominent newspapers having circulation in Maharashtra and in North India, that the Defendant’s restaurant KAREEM’S is not associated with the Plaintiff’s – KARIM HOTEL PVT LTD or KARIM/KARIM’S/KAREEM Restaurant from Jama Masjid or Delhi. The said notices shall be published by the next date.
(iv) All the advertisements and promotional materials, menu cards, etc. including all promotions on social media and online platforms, shall carry a prominent disclaimer to the following effect:
“No connection with KARIM’S Jama Masjid/Delhi”.
(v) The above inclusion of disclaimer be effected within two weeks in respect of all existing and future promotional materials.
High Court directed the defendant to record his written statement by 5th July, 2022 along with copies of the franchise agreements entered into by him with his various franchisees. Defendant shall in the reply, state as to the monthly franchise fees being earned/collected by him under the said agreements and the total such fees collected to date.
Matter to be listed on 8-8-2022. [Karim Hotel (P) Ltd. v. Kareem Dhanani, 2022 SCC OnLine Del 1610, decided on 27-5-2022]
Advocates before the Court:
For the plaintiff:
Dr. Farrukh Khan, Ms. Ishita, Mr. Alankrit Bhatnagar, Advocates
For the defendant:
Mr. Vivek Singh, Advocate.